ARGENTINA Law and Practice Contributed by: Santiago R O’Conor, Gisela M Russo, Gisela M Manrique and Ayelen Rocio Velaz, O’Conor & Power
Abandonment The abandonment defence is based on the plaintiff having abandoned their trade mark, meaning that they have not used it for an extended period of time. For this defence to be valid, the defendant must show that the plaintiff has not used their trade mark for at least five years. Expiration The revocation defence is based on the fact that the registration of the plaintiff’s trade mark has expired. In order for this defence to be valid, the defendant must show that the plaintiff’s trade mark registration has expired. Relative Defences Relative defences include: • fair use; • functionality; • defence of the proper name; • limitation; • the defence of laches; • the estoppel defence; and • acquiescence. In Argentina, these defences are recognised by law and can be invoked in a trade mark infringement law - suit. The Trade Marks and Designations Law (Law No 22.362) and the Copyright Law (Law No 11.723) establish the defences that can be invoked in a lawsuit for trade mark and copyright infringement. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Argentina recognises an exception to copyright infringement. The Copyright Law (Law No 11.723) establishes in its Article 32 that the use of a work protected by copyright for the purposes of criticism, commentary, news, teaching, research or study will not be considered a copyright infringement, as long as the source and the name of the author are mentioned, and that the use is reasonable and does not affect the normal exploitation of the work. The Supreme Court of Justice has also established in several rulings that satire and parody can be con -
sidered as an exception to copyright infringement, as long as certain requirements are met, such as: • the satire or parody is an original work; • the satire or parody is a criticism or commentary; • the satire or parody does not affect the normal exploitation of the work; and • mention is made of the source and name of the author. Argentina recognises several exceptions to trade mark infringement. Article 12 of the Trade Mark and Desig - nation Law (Law No 22.362) establishes that the use of a trade mark will not be considered a trade mark infringement in the following cases: • descriptive use; • generic use; • comparative use (according to certain characteris - tics); • use for criticism or commentary purposes; • use for teaching or research purposes; • use of an earlier mark; and • use of a trade mark in a different context. In addition, the Supreme Court of Justice has estab - lished in several rulings that the use of a registered trade mark can be considered as an exception to trade mark infringement if certain requirements are met, such as: • the use of the trade mark is honest; • the use of the trade mark is not unfair; and • the use of the trade mark does not affect the dis - tinctiveness of the registered trade mark. 9.3 Exhaustion Argentina’s legal system does not adopt an express position on the exhaustion of duties and parallel imports. However, it could be argued that there is no legal framework by which the entry into the country of genuine products introduced into the international market through their owner or with their consent can be prevented. As they are legitimate goods, the import could not be classified as counterfeit or fraudulent imi - tation. Likewise, as it consists of goods acquired from the trade mark owner or from its licensees, distribu - tors or dealers, it could not be classified as the use of
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